Will patent trials change?

The United States Supreme Court does not frequently review patent cases.
Thus, when it takes a case for review, expectations are high. Thus, changes were
anticipated when the Court reviewed Markman v. Westview, 38 USPQ 2d 1461 (United
States Supreme Court 1996) and Warner-Jenkinson Co. v. Hilton Davis Co., 41 USPQ
2d 1865 (1997). While the cases modified the existing law, the decisions were
more evolutionary than revolutionary.

First case. How the court determines the scope of a patent was a problem dealt with in Markman v. Westview. It has been widely believed that the earlier the scope of the patent could be determined in the litigation process, the more efficient the process could be. Yet in the past, the jury construed the patent as part of the overall infringement question at the end of the process.

Although the court held that the judge should decide patent construction instead of the jury, it did not specify whether the construction must take place in the beginning or end of the litigation process. Thus, the question of timing is up to the judge handling the case. Some courts have held the so-called Markman hearing at the beginning of the process; others wait until the jury hears the question of infringement.

The second case. In Warner-Jenkinson v. Hilton Davis, the Doctrine of Equivalents (DoE) was at issue. A claim is a written paragraph(s) at the end of the patent used to define the scope of protection. The question is whether the patent is limited to the exact words used (i.e., literal meaning). The courts have held that a gray area of protection beyond the words used protects equivalent structures under the Doctrine. Some believe that this Doctrine is being abused, thus the expectations for the Warner-Jenkinson case.

Also at issue was whether a judge or jury should determine patent infringement under the DoE. In this case, some argued that the Doctrine could be improperly expanded to include the allegedly infringing device.

The DoE is a court-determined doctrine which is reviewed on a case-by-case basis. For example, is some new technology in a device covered by a pre-technology patent? Sometimes it is, sometimes it isn't. Proceedings in the PTO can have an impact on the Doctrine's scope. The Court found that the basic Doctrine of Equivalents was alive and well and correct in concept. Moreover, the jury decides the scope of the Doctrine. Aside from confirming that law and creating a presumption regarding PTO actions, the Court decision did not break new ground.

Before Markman and Warner-Jenkinson, DoE applications seemed to be expanding. After Markman, because the judge decides the timing of patent construction, it may not much change the litigation process. Therefore, decisions regarding motions or discovery may not be based on a specific meaning for the patent. Plus, the DoE may still be deployed like a net to cover infringing structures.

Thus most changes only affect how a patent's scope is determined and how much the patent-obtaining process will effect the scope of the Doctrine of Equivalents.

Legal Questions

Q: What is the scope of legislation now pending in Congress regarding changes in the patent law?

A: Congress is looking at questions of (a) a separate corporation for the U.S. Patent and Trademark Office (rather than keeping it within the Department of Commerce), (b) the possibility of publishing the patent application 18 months after filing, and (c) prior user rights. The length of the term of a patent and various funding provisions are also included.

Q: What is the status of the legislation?

A: The bill has passed the House and is now before the Senate where its status and amendments are not clear.

Q: Is it ever too late to sue?

A: Since last discussed in a 1982 column, the courts have established a presumption that if suit is brought after six years, the defendant is presumed to have been injured. Moreover, the issue of defendant's reliance on plaintiff's knowledge has been minimized. Thus, as a practical matter, patent suits filed after six years are too late.

Q: Does the recent tax act have any impact on persons inventing technology and/or owning or controlling patents or patent applications?

A: When capital gains were lower, patent transfers were structured to fall within the capital gains provisions. The current situation seems to provide the capital gains benefits once again, however, one needs to see the law's actual structure of new law before deciding.

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